10
‘pepper’ but is also applied to a wide range of products offered by various
other parties throughout the world. If a monopoly is granted in respect of
PEPPA it is hard to see how it would not extend to the use of pepper as a
prefix, as in pepperoni, pepperpot (a West Indian stew), pepperwort or pepper
sauce, all of which are in common usage. As the respondent’s registration
extends to confectionery peppermint would also be affected. But one cannot
monopolise the commons of the English language in that way.
[23]
The finding by the full court that the two trade marks are the same
because they commence with the word PEPPA, is incorrect. The conclusion
that, had it not been for the addition of a pepper device to each parties’ mark,
the result would have been the same as in Yuppiechef, that is, the mark would
not be considered to be confusingly similar, is wrong. The parties’ marks do
not have identical devices. The devices are far from being identical. A notional
purchaser or consumer looking at the two marks, even fleetingly, would be in
a position to tell them apart. The differences between the two marks are
apparent and would be identified without difficulty or prior coaching by
members of the public. Viewed together and side by side the respective
marks and devices are not the same. A purely verbal comparison is not
enough. The court must transport itself to the marketplace to try and visualise
how customers of the goods in relation to which the marks are used would
react. Applying the test in Plascon-Evans, which has been followed in a
number of decisions by this court, the marks are visually, phonetically and
conceptually dissimilar. It is unlikely that a significant section of the public
would consider that PEPPAMATES is the same as PEPPADEW. The full
court erred in failing to take into account the distinguishing features between
the two marks.
[24]
The appeal is upheld with costs, such costs to include the costs of two
counsel where so employed. The order of the full court is set aside and
substituted with the following:
1 The appeal is upheld with costs, such costs to include those consequent
upon the employment of two counsel.
2 The order of the full court is set aside and replaced by the following: